How We Work

A corporate counsel of fortune 500 company, who serves as the main in-house counsel overseeing the day-to-day management of the corporation’s offensive and defensive patent infringement litigations, has retained us on an on-going basis for the last several years to help the corporation on the majority of its patent infringement litigations. As many corporate counsel find they no longer have time to keep abreast of the rapid developments in the patent law, this corporate counsel was looking for a trusted resource to help him objectively evaluate the merits of the legal positions and strategies recommended by the corporation’s various outside counsel. To aid in this evaluation and to help ensure that the best possible legal arguments are being asserted on behalf of the corporation, we analyze and evaluate drafts of the briefs and pleadings proposed by the various outside counsel. Specifically, we assess the merits of legal arguments presented in the proposed brief or pleading. Where warranted we offer additional theories and case law precedent to improve and/or further support the adovacted positions. We also provide warnings where the legal arguments appear open to attack and suggest legal theories and supporting case law to preempt or counter such arguments where possible. The “redline reviews” we perform for this corporate client cover the full gamut of issues that arise in patent litigation, including claim construction briefing, infringement and validity summary judgment briefing, expert reports, Daubert motions, jury instructions, infringement and validity contentions, patent infringement complaints and answers thereto, venue transfer motions, and discovery motions. So that the corporate counsel can meet his deadline in getting comments back to the outside counsel, we typically turn our review around in a matter of hours upon receiving the request from the corporate counsel. This allows the corporate counsel to use our suggestions as the basis for his comments to outside trial counsel. We also help the corporate counsel assess litigation strategies proposed by outside counsel and look for ways to further support and improve those strategies in view of the current case law.

Facing time pressures due to a next-day deadline before the International Trade Commission, one of the nation’s leading patent law firms retained us to help its litigation team complete a 100-plus page claim-construction brief; addressing 5 patents and over 30 disputed claim terms relating to smart phone technology. After being retained in the late afternoon for the project, we worked with the members of the firm’s litigation team through the night and wee hours of the morning to identify and cite on-point case law precedent to support the factually advocated claim-construction contentions. Having entered the project with no prior background on the matter, we also served as a sounding board to review and scrutinize the arguments in the same cold light as the administrative law judge likely would. Based on our review, we recommended modifications to several of the claim construction contentions, and provided warnings of possible counter arguments that the adversary could raise and suggested ways to deflate such counter arguments. A few weeks later, the firm requested us to perform similar services as they drafted their reply claim construction brief. Since then, other partners from the firm have retained us to provide similar help on other patent litigation matters.

The patent group of a national general practice law firm, representing a patentee in an infringement litigation, had to respond to a motion to dismiss for lack of standing first sprung on the patentee three days before trial was set to begin. The law firm’s client had established a chain of offshore entities and had transferred the asserted patents rights along the chain in a complex series of intra-corporate licenses. Seeking to defeat the lost profits damages claim, the accused infringer challenged the standing of each of the corporate affiliates in a last-minute filing. The law firm turned to us to help the trial team and corporate counsel analyze the series of intra-corporate license agreements and conveyances of the rights in the asserted patents and develop legal arguments with supporting authority to counter the standing challenges. Applying our understanding of the case law addressing the requirements to show standing, we prepared the legal arguments for several briefs to oppose the standing challenge. Additionally, we aided in preparing the trial counsel to argue the motion. The patentee succeeded in defeating the standing challenge.

A corporate counsel of an integrated chip manufacturer with overseas manufacturing operations was seeking a strategy to use the corporation’s foreign facilities to minimize the corporation’s exposure to claims of U.S. patent infringement. The corporate counsel retained us to provide advice and counsel on issues relating to the current state of U.S. patent law regarding liability for offers for sales made abroad, application of exhaustion principles, and strategies for minimizing the corporation’s exposure in making and selling its products. In a two day turn around time we delivered a detailed analysis of the implicated legal issues and a recommendation for ways to structure sales and offers for sale to minimize exposure. Determining that we had identified strategies that had been overlooked by memos that counsel had received from large law firms, the corporate counsel retained us to provide additional analysis and consultation on other patent law issues the corporation was facing in pending patent infringement litigations.